Our trademark infringement solicitors have substantial experience advising clients on all aspects of intellectual property including registering trademarks, drawing up trademark strategies and policies and enforcing trademarks or dealing with disputes and trademark infringement.
Trademarks and protecting your brand
What is a brand?
When we think of an organisation, it is usually the brand that springs to mind, rather than the physical products or the people who run it. Brands can take many different forms: it may be the name of the business or a particular product (for example, AUDI), or the stylised form or typographic representation of the name, a graphic device or logo (the four interlocking rings), and / or a strap line (Vorsprung durch Technik).
The terminology dates back to the time when livestock were routinely branded with a mark indicating the identity of their owner. Today’s brands serve exactly the same purpose: to indicate the origin or source of the organisation whose goods or services are marked with the branding. All elements of a brand or logo must be distinctive and unique to the company (the owner) and must distinguish it from similar goods and / or services produced by the competition. There are examples of companies, all over the world, which are considered inherently trustworthy because the time and money invested in creating (and protecting) brands which are instantly recognisable and towards which customers feel enormous goodwill. Outstanding British examples include Rolls Royce, the RSC, the BBC, and John Lewis to name but a handful.
Protecting your brand by registering a trademark
Brands are the guardians of a company’s reputation and thus very valuable rights. Registering elements of the branding as trademarks gives the brand legal protection and will prevent others from compromising it by using any of the elements that have been registered. Once a trade mark has been registered, the owner may use the ® symbol next to the symbol/name/strapline which indicates that this is a registered trade mark. Registered trademarks can also be licensed or sold by the owner.
What cannot be registered as a trademark
There are some restrictions but most of them are common sense. You cannot register trademarks that are:
- a generic description of the goods or services offered under the branding (for instance, you cannot register the word ‘tweed’ if you are a tweed manufacturer but you could register ‘McInley’s Tweed’);
- insufficiently distinctive
Before registering your trade mark it is advisable to check, via the trade marks database, that it hasn’t already been registered.
Rhys Jarman is praised as "a very, very able litigator who's very good at dealing with clients in the way they want to be dealt with - particularly in finding good solutions for their budgets
We have been helping clients across a number of different sectors, from rural businesses and sporting organisations to logistics and manufacturing businesses, to protect their brands by registering and enforcing their trade marks. In particular we have:
- Defended challenges to the registration of trade marks by third parties with similar trademarks;
- Negotiated a co-existence agreement to allow for the continued use of similar brands by two different businesses;
- Stopped a competitor misusing our client’s registered trademarks;
- Advised on how to respond to an allegation that our client had infringed someone else’s trade mark;
- Prevented another business from passing itself off as connected with our client’s business;
- Secured the return of a domain name to its true owner from a third party who had no rights to the domain name.
What happens if you don’t register a trademark?
If you do not register your branding as a trade mark then it is open to misuse by others. If this occurs, your only remedy is to depend on the law of ‘passing off’ which can be difficult prove. To do so, you have to prove that:
- You have goodwill and reputation in the unregistered trade mark;
- The other party is wrongly representing to the market that they are selling your goods or are associated with your business; and
- Your business has suffered loss and been damaged by the unauthorised use of the unregistered trade mark.
In addition, if you do not have a registered trade mark, you cannot use the ® symbol (and it is a criminal offence to do so in the UK) although you may use the ™ symbol with an unregistered trade mark.
Registering a trade mark is relatively inexpensive and straightforward and can save you a great deal of time and money in future if you find yourself having to defend your brand and the use of your logo or domain name by a competitor. We are very happy to discuss any element of registration and help you determine what should, and should not, be registered.